UNITED STATES PATENT AND TRADEMARK
`
`OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MODERNA THERAPEAUTICS,
`Petitioner,
`
`INC.,
`
`v.
`
`PROTIVA BIOTHERAPEAUTICS,
`Patent Owner.
`
`INC.,
`
`Case IPR2018-00739
`Patent 9,364,435
`
`DECLARATION OF EDWARD R. REINES IN SUPPORT OF
`
`PATENT OWNER'S MOTION FOR PRO HAC VICE ADMISSION
`
`PROTIVA - EXHIBIT 2001
`Moderna Therapeutics, Inc. v. Protiva Biotherapeautics, Inc.
`IPR2018-00739
`
`
`
`OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MODERNA THERAPEAUTICS,
`Petitioner,
`
`INC.,
`
`v.
`
`PROTIVA BIOTHERAPEAUTICS,
`Patent Owner.
`
`INC.,
`
`Case IPR2018-00739
`Patent 9,364,435
`
`DECLARATION OF EDWARD R. REINES IN SUPPORT OF
`
`PATENT OWNER'S MOTION FOR PRO HAC VICE ADMISSION
`
`PROTIVA - EXHIBIT 2001
`Moderna Therapeutics, Inc. v. Protiva Biotherapeautics, Inc.
`IPR2018-00739
`
`
`
`I, Edward R. Reines, hereby declare the following:
`
`1.
`
`I am an attorney in the law firm of Weil, Gotshal & Manges LLP. I
`
`have over 25 years of experience as a patent litigator and have represented clients
`
`in numerous patent litigation cases in various United States District Courts and the
`
`Court of Appeals for the Federal Circuit.
`
`2.
`
`I am comfortable and experienced with technically and legally
`
`complex matters, such as will be present in this proceeding. In particular, I am
`
`experienced with technically and legally complex matters in the life sciences,
`
`including the following exemplary matters:
`
`• Verinata Health, Inc. et al. v. Sequenom, Inc. et al. (N.D. Cal. 2012)
`
`— Lead trial counsel for Verinata Health in patent litigation related to prenatal
`
`diagnostics based on cell free fetal DNA.
`
`• The Trustees of Columbia University in the City of New York v.
`
`Illumina, Inc. (Fed. Cir. 2014) — Appellate counsel for Illumina in Federal Circuit
`
`appeals of IPR proceedings related to DNA sequencing nucleotides.
`
`• Promega Corp. v. Life Techs. Corp. et al. (2014) — District court and
`
`appellate counsel for Life Technologies in litigation related to DNA testing kits.
`
`• Helicos Corp. v. Pacific Biosciences of California, Inc. (D. Del. 2010)
`
`— Lead trial counsel for Pacific Biosciences in patent litigation related to single
`
`molecule real time DNA sequencing.
`
`1
`
`
`
`• Applera Corp. and Roche Molecular Sys. v. MJ Research, Inc. (D.
`
`Conn. 2005) — Trial counsel for Applera in six patent litigation involving
`
`foundational PGR intellectual property.
`
`I have appeared pro hac vice in an IPR proceeding related to multiplex
`
`nucleic acid reactions. See Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-
`
`01093, Paper No. 29 (March 16, 2015).
`
`3.
`
`I am a member in good standing of the Bar of the State of California.
`
`I am admitted to practice before the United States Court of Appeals for the Federal
`
`Circuit.
`
`4.
`
`I have never been suspended or disbarred from practice before any
`
`court or administrative body.
`
`5.
`
`I have never had a court or administrative body deny my application
`
`for admission to practice.
`
`6.
`
`I was reprimanded by the Federal Circuit in In re Reines, No. 14-
`
`MA004 (14-4) (Fed. Cir. Nov. 5, 2014), which is enclosed herewith as Exhibit 2002.
`
`The Federal Circuit did not halt or interrupt my ability to appear before that court
`
`and no other Court or body has done so. The basis for the reprimand is set forth in
`
`the Court's opinion. Ex. 2002. The following is my explanation of the
`
`circumstances. On March 4, 2014,1 argued two cases in the Federal Circuit. On
`
`March 5, 2014,1 was surprised and gratified at receiving from then-Chief Judge
`
`2
`
`
`
`Rader an email relaying an unusually generous compliment about my oral advocacy
`
`during the two arguments ("the Email"). The compliment did not address the merits
`
`of the case. It did not indicate anything about how the panel might vote in the case.
`
`It simply confirmed that I had done a very good job at my craft of appellate
`
`advocacy. The fact that the Email had come from Judge Rader did not strike me as
`
`inappropriate. The compliment itself was consistent with my relief and satisfaction
`
`that I had performed well for my clients. Judge Rader forwarding the compliment
`
`was also consistent with his well-known gregarious style. The Email's use of the
`
`word "friend" raised no questions in my mind. That term is commonplace in Judge
`
`Rader's lexicon. I have heard Judge Rader use it scores of times with references to
`
`many people in professional settings. The signoff did not strike me as remarkable
`
`given Judge Rader's well-known penchant for turns of phrase. I was focused on the
`
`compliment in the Email. Judge Rader expressly encouraged me to pass along the
`
`compliment. I have received compliments about my work before and did not
`
`forward them to anyone. After thinking about the suggestion, I decided that I
`
`would pass along the Email. I forwarded the compliment to a number of people—
`
`my mom, brothers and sister, friends, clients, former clients, prospective clients,
`
`and lawyers. I did not distribute it to the general public. I selected the recipients
`
`because the unusually generous compliment from an unnamed jurist was a source
`
`of pride and might encourage them to consider me for representation in future
`
`3
`
`
`
`matters. I thought such distribution was appropriate because information about my
`
`skill at oral advocacy is an appropriate consideration in the selection of counsel. It
`
`never occurred to me that the selected recipients of the Email would think that
`
`Judge Rader could be improperly influenced because an advocate before him
`
`happened to be a friend from their years of professional interaction. To me, the
`
`Email did not suggest any such thing and the distribution of the Email did not
`
`suggest any such thing. Indeed, I would never have included in these emails the
`
`suggestion that Judge Rader would judge with bias in my matters. That suggestion
`
`would obviously be unprofessional and seen as such by my personal and
`
`professional network.
`
`7. My explanation of this matter is also set forth in a statement I
`
`submitted to the Federal Circuit, which is enclosed herewith as Exhibit 2003.
`
`8.
`
`I have read and will comply with the Office Patent Trial Practice
`
`Guide and the Board's Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
`
`9.
`
`I agree to be subject to the United States Patent and Trademark Office
`
`Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq., and
`
`disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
`
`10. As noted above, I appeared pro hac vice in Ariosa Diagnostics, Inc. v.
`
`Ilium ina, Inc., IPR2014-01093, which was a life-sciences related inter partes
`
`review proceeding before the United States Patent and Trademark Office. I also
`
`
`
`appeared pro hac vice before the Patent Trial and Appeal Board in the following
`
`proceedings: GuardantHealth, Inc. v. Foundation Medicine, Inc., IPR2017-01170;
`
`Guardant Health, Inc. v. Foundation Medicine, Inc., IPR2017 -01447; Guardant
`
`Health, Inc. v. Foundation Medicine, Inc., IPR2017- -01448; 10XGenomics v. The
`
`University of Chicago, IPR2015-01156; 10X Genomics v. The University of
`
`Chicago, IPR2015-01157; 10X Genomics v. The University of Chicago, IPR2015-
`
`01158; 10X Genomics v. The University of Chicago, IPR2015-01162; 10X
`
`Genomics v. The University of Chicago, IPR2015-01163; 10X Genomics v.
`
`RainDance Technologies, Inc., IPR2015-01558; 1 OX Genomics v. The University
`
`of Chicago, IPR2015-01560; Sorge v. Kawashima, Interference No. 106,019; and
`
`Sorge v. Kawashima, Interference No. 106,020.
`
`11.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements are made with the knowledge
`
`that willful false statements and the like so made are punishable by fine or
`
`imprisonment, or both, under Section 10(
`
`Code.
`
`Date: May 30, 2018
`
`Edward R. Reines
`
`5
`
`
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